- Samsung Display Co., Ltd / Samsung Electronics Co., Ltd et al. v. Polaris Powerled Technologies, LLCSome claims unpatentablePTAB · Oct 11, 2024 · IPR2023-00771 · APJ Kara L Szpondowski · IPR · Final written decision
Claims 1–4 and 7 are unpatentable over Kim and Steer; claim 5 was not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts a person of ordinary skill in the art “would have [had] a B.S. in Electrical Engineering or equivalent field, with 3–5 years of academic or industry experience in OLED display engineering or comparable industry.” Pet. 12 (citing Ex. 1002 ¶¶ 44–45). Petitioner further asserts that “[a]dditional education could compensate for less practical experience and vice versa.” Id. Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art, and “applies Petitioner’s definition.” PO Resp. 7 (citing Pet. 12; Ex. 1002 ¶ 44). Because nothing in the record persuades us that our preliminary finding in the Institution Decision (Dec. 13) adopting Petitioner’s proposal was incorrect, and because the parties apply the same definition at trial, we maintain our adoption of Petitioner’s proposed level of ordinary skill in the art.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“3. Analysis Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Both parties have presented their understanding of the plain and ordinary meaning of the terms “referenced to” and “independent of.” In the Institution Decision, we requested that “[i]f there is a dispute over the plain and ordinary meaning of these terms, the parties should address those issues during trial.” Dec. 14–15 n.6. On this record, the parties do not dispute each other’s understanding of the plain and ordinary meaning of these terms, and, based upon the parties’ arguments, we determine that no express construction of the claim terms is necessary to resolve the controversy, but address the parties’ arguments in the context of the prior art below.6” slip op. at 16
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“(1) Whether Kim teaches a “video driver receiving the video signal and generating a video drive signal indicative of the video signal” We are persuaded that Petitioner has shown that the identified portion of Kim’s Figure 10 teaches the recited “video driver” and “generat[es] a video signal.” We find particularly persuasive Petitioner’s annotated comparison of Figure 4 of the ’521 patent as compared to Kim’s Figure 10 (both reproduced above), which illustrates the similarities between the ’521 patent and Kim. See Pet. 25–28. As set forth by Petitioner, Kim’s voltage at node A4 (video drive signal generated by the video driver identified in the dark green box) is supplied to the gate of transistor M31, driving the organic light emitting diode OLED by the video driver circuitry identified in the dark green box, similar to how voltage v(t) 322 (video drive signal) is supplied to the gate of transistor M1 driving the OLED 32 by video driver 32 in Figure 4 of the ’521 patent. Id. at 29.” slip op. at 27
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“such as that it is a “simpler design,” would be “an obvious design choice,” “would simplify material needs and cost,” was “well-known,” was a “trivial design change,” would “provide immunity to power source noise,” and “would allow rejection of other power supply noise, such as drift.” Pet. 68– 70. However, several of these reasons focus on what a person of ordinary skill in the art would have been able to do, rather than what a person of ordinary skill in the art would have been motivated to do at the time of the invention. See Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1068– 69 (Fed. Cir. 2018) (finding problematic that “the Board focused on what a skilled artisan would have been able to do, rather than what a skilled artisan would have been motivated to do at the time of the invention”); InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014). We find Petitioner’s arguments unpersuasive because they amount to little more than an assertion that the recited limitations could have been easily achieved. We agree with Patent Owner that Petitioner’s proposed modification of Hayafuji is a redesign that appears to be the result of hindsight rather than based upon a persuasive reason for the modification. See Sur-reply 15–18. Petitioner’s argument that the modification involves adding to the functionality of Hayafuji by using an obvious variation of the circuitry Hayafuji already discloses that eliminates both the ripple component and the non-ripple component (see Reply 20–21) supports the conclusion that the proposed modifications were improperly informed by the requirements of the claim. For example, Dr. Kattamis’s testimony describes the proposed modifications, which include removing the ripple component extraction circuit and rewiring the existing circuit. Ex. 1015 ¶¶ 270–273, 321–331. We find that the extent of the proposed modifications is more suggestive of hindsight than obviousness. See Metalcraft of Mayville, Inc. v. The Toro Co., 848 F.3d 1358, 1367 (Fed. Cir. 2017) (“[W]e cannot allow hindsight bias to be the thread that stitches together prior art patches into something that is the claimed invention.”); InTouch, 751 F.3d at 1351 (Fed. Cir. 2014) (criticizing use of the challenged patent as a “roadmap” for putting what the expert referred to as “pieces of a ‘jigsaw puzzle’” together).” slip op. at 57
Patent outcomesUS 7,259,521 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,259,521 - Microchip Technology Inc. v. Aptiv Technologies AGInstitution deniedPTAB · Oct 7, 2024 · IPR2024-00558 · APJ Terrence W Mcmillin · IPR · Institution
The Board denied institution, finding no reasonable likelihood of showing claims 1, 3, 5, and 11–17 unpatentable because the contingent claim construction was unmet and the art showing was inadequate.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“D. Summary We decline to institute trial because: (1) the claim construction contingency in the Petition has not been met; (2) the claim construction proposed in the Petition is not persuasively argued or adequately supported; and (3) the Petition fails to show that all the limitations of any challenged claim are taught or suggested by the cited art. Petitioner has failed to show a reasonable likelihood that it will prevail in establishing the unpatentability of challenged independent claim 1 or any of the challenged dependent claims. III. CONCLUSION For the foregoing reasons, we have determined that Petitioner has not established a reasonable likelihood of prevailing with respect to any claim. Therefore, we do not institute an inter partes review. IV. ORDER Accordingly, it is ORDERED that the Petition is denied, and no trial is instituted.” slip op. at 14
- BurdenDenied
“Thus, the Petition fails to provide a showing that the cited art teaches or suggests “a USB port having a plurality of USB ports” as recited in sole independent claim 1 of the ’037 patent. D. Summary We decline to institute trial because: (1) the claim construction contingency in the Petition has not been met; (2) the claim construction proposed in the Petition is not persuasively argued or adequately supported; and (3) the Petition fails to show that all the limitations of any challenged claim are taught or suggested by the cited art. Petitioner has failed to show a reasonable likelihood that it will prevail in establishing the unpatentability of challenged independent claim 1 or any of the challenged dependent claims.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“With regard to claim construction, Patent Owner’s Preliminary Response states: For purposes of this Petition, Petitioner adopts [Patent Owner]’s proposed construction in parallel district court argument in the district court litigation on the claim construction issues. We have not had the benefit in this proceeding of adequate briefing and argument on claim construction. We decline to analyze and adopt a claim construction on the inadequate record here. 6 Claim elements 1[d], [e], and [f] are defined in the bolded headings on pages 62, 64, and 69, respectively, of the Petition. litigation.[7] (Pet., 29-30) At this time, Patent Owner sees no need for the Board to further construe any claim language because the Board need only construe terms that are in controversy. See Realtime Data, LLC v. Iancu, 912 F.3d 1368 (Fed. Cir. 2019). Prelim. Resp. 21 (footnote omitted). As noted previously, Patent Owner did not propose a construction relating to the phrase “a USB Hub having a plurality of USB ports” as recited in claim 1 in the parallel district litigation, but, instead, argued against Petitioner’s contention that it was indefinite. See Ex. 1080, 13–16. Thus, Patent Owner contends that we need not engage in any claim construction relating to the phrase “a USB Hub having a plurality of USB ports” as recited in claim 1. Accordingly, Patent Owner does not provide any argument or evidence relating to construction of this phrase. See id. We do not adopt the claim construction upon which the Petition relies because it is not persuasively argued or adequately supported by either party.8” slip op. at 11
- Prior constructionPrior construction not adoptedDecided for patent owner
“Petitioner argues that, in the district court litigation, Patent Owner contends that, in the phrase “a USB Hub having a plurality of USB ports” as recited in claim 1 (see Ex. 1001, 9:15 (emphasis added)), the term “having” means “interconnected to.” Pet. 29. The District Court considered the arguments of the parties regarding this limitation in claim 1 (Ex. 1080, 13– 16),1 but decided not to construe this limitation (id. at 16 (“[I]t is unclear to me if ‘having’ requires further construction. Thus, I will not construe the term.”)).2 The contingency upon which the claim construction in the 1 There are two sets of page numbers on these pages of Exhibit 1080. We refer to the page numbers added to Exhibit 1080 for purposes of this proceeding and set forth in the lower, right corner of the pages. Pages 13–16 of Exhibit 1080 correspond to pages 10–13 of the original document. 2 In an email to the Board, Petitioner contends that it could not have anticipated this outcome. Ex. 3001 (“Petitioner could not reasonably anticipate when it filed the Petition that the district court would make such a statement after finding the claim not indefinite.”). Patent Owner argues to the contrary. Ex. 3002 (“Patent Owner disagrees that Petitioner could not reasonably have anticipated that the district court would not construe the term ‘having’ since neither party proposed a construction for that term—a Petition is based has not been met and, according to its own terms, the Petition should be denied.3 B.” slip op. at 9
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 9,460,037 - Microchip Technology Inc. v. Aptiv Technologies AGInstitution deniedPTAB · Oct 7, 2024 · IPR2024-00494 · APJ Terrence W Mcmillin · IPR · Institution
The Board denied institution because the Petition’s contingent claim construction was unmet and unsupported, and the cited art was not shown to teach all limitations of claims 1, 2, 4, and 6–10.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“D. Summary We decline to institute trial because: (1) the claim construction contingency in the Petition has not been met; (2) the claim construction proposed in the Petition is not persuasively argued or adequately supported; and (3) the Petition fails to show that all the limitations of any challenged claim are taught or suggested by the cited art. Petitioner has failed to show a reasonable likelihood that it will prevail in establishing the unpatentability of challenged independent claim 1 or any of the challenged dependent claims. III. CONCLUSION For the foregoing reasons, we have determined that Petitioner has not established a reasonable likelihood of prevailing with respect to any claim. Therefore, we do not institute an inter partes review. IV. ORDER Accordingly, it is ORDERED that the Petition is denied, and no trial is instituted.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“With regard to claim construction, Patent Owner’s Preliminary Response states: For purposes of this Petition, Petitioner adopts [Patent Owner]’s proposed construction in parallel district court argument in the district court litigation on the claim construction issues. We have not had the benefit in this proceeding of adequate briefing and argument on claim construction. We decline to analyze and adopt a claim construction on the inadequate record here. 6 Claim elements 1[d], [e], and [f] are defined in the bolded headings on pages 62, 64, and 68, respectively, of the Petition. litigation.[7] (Pet., 29-30) At this time, Patent Owner sees no need for the Board to further construe any claim language because the Board need only construe terms that are in controversy. See Realtime Data, LLC v. Iancu, 912 F.3d 1368 (Fed. Cir. 2019). Prelim. Resp. 21 (footnote omitted). As noted previously, Patent Owner did not propose a construction relating to the phrase “a USB Hub having a plurality of USB ports” as recited in claim 1 in the parallel district litigation, but, instead, argued against Petitioner’s contention that it was indefinite. See Ex. 1080, 13–16. Thus, Patent Owner contends that we need not engage in any claim construction relating to the phrase “a USB Hub having a plurality of USB ports” as recited in claim 1. Accordingly, Patent Owner does not provide any argument or evidence relating to construction of this phrase. See id. We do not adopt the claim construction upon which the Petition relies because it is not persuasively argued or adequately supported by either party.8 7 It is clear that Patent Owner is referring to the agreed-upon construction of “embedded Universal Serial Bus (USB) Host” in the preamble of claim 1. See Ex. 1080, 3; see also Pet. 30. There is no agreed-upon construction of the phrase “a USB Hub having a plurality of USB ports” as recited in claim 1. As noted, Petitioner argues this phrase renders claim 1 indefinite. See Pet. 26 (“Petitioner argues in district court that claim 1 is indefinite.”), 28– 30. 8 In a proceeding involving a related patent, IPR2024-00496, Petitioner contends that the parties had an agreed-upon construction relating to the phrase “a USB Hub having a plurality of USB ports.” IPR2024-00496 Paper 11, 11–13. This is inaccurate. Petitioner does not direct our attention to any such agreement and we find none in the record of that or this proceeding.” slip op. at 11
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Petitioner maps the cited art to claim 1 as incorporating the interpretation of claim 1 proposed by Patent Owner in the district court litigation. See Pet. 56–59. Specifically, in the Petition, the phrase “a USB Hub having a plurality of USB ports” is rewritten by Petitioner to read “a USB Hub [interconnected to] a plurality of USB ports” or as rewritten with “possessing” in place of “interconnected to.” Id.9 The Petition alleges unpatentability under this construction. Id.; see also id. at 27 (“Petitioner demonstrates unpatentability of the Challenged Claims under this construction.” (footnote omitted)). As discussed above, Petitioner contended, in the district court litigation, that “having” as recited in claim 1 rendered the claim “nonsensical” and, thus, indefinite. Ex. 1080, 13–14. And, the District Court considered whether “having” had the same meaning in the context of claim 1 of the ’037 patent as “interconnected to” or “possessing” and 9 The Petition states that, “[f]or ease of analysis, Petitioner uses [Patent Owner]’s ‘interconnected to’ language since that phrase is used elsewhere in the claims, but the results are the same if ‘possessing’ was used instead.” Pet. 30 n.11. determined that these terms were not equivalent. Id. at 14. We agree with the District Court. Thus, the Petition fails to provide a showing that the cited art teaches or suggests “a USB port having a plurality of USB ports” as recited in sole independent claim 1 of the ’037 patent.” slip op. at 13
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 9,460,037 - PTAB · Sep 12, 2024 · IPR2024-00620 · APJ John A Hudalla · IPR · Institution
Instituted IPR on claims 1–8, 14–22, and 25 on all asserted grounds after finding a reasonable likelihood of prevailing on the Tobita obviousness grounds and declining General Plastic denial.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“person of ordinary skill in the art “would have had a relevant technical degree in Electrical Engineering, Computer Engineering, Materials Science, Physics, or the like, and experience in active matrix display design and electroluminescence.” Prelim. Resp. 16 (citing Ex. 2019 ¶ 36). Patent Owner criticizes Petitioner’s proposed definition because it “entails only general ‘circuit design’ experience with no experience in active matrix display design and electroluminescence, the subject matter of the ’593 Patent.” Id. at 17; see also Ex. 2019 ¶¶ 38–39 (Dr. Wolfe’s testimony regarding the same). In particular, Patent Owner argues that “[i]mportant aspects and considerations of the pixel circuit design are unique to the context of active matrix display design and to electroluminescent displays.” Prelim. Resp. 17 (citing Ex. 2019 ¶ 38). Patent Owner additionally notes that the Administrative Law Judge (ALJ) in the ITC Investigation adopted Patent Owner’s definition. Id. at 16–17 (citing Ex. 2018, 12). For purposes of this Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art. Although “[t]he challenged patent pertains generally to the field of OLED displays,” it is directed “more particularly to the circuitry used to drive and control the pixels that comprise the light-generating elements of the display.” Ex. 1003 ¶ 29; see also Ex. 1001, 1:16– 18 (describing the Field of the Invention as relating to “a stage circuit and an organic light emitting display using the same”). Moreover, we note, for example, that claim 1 does not include any limitations directed to “active matrix displays” or any other particular type of display, which suggests that an ordinarily skilled artisan need not have had specific experience designing such displays. See Ex. 1001, 9:43–45 (reciting “[a] stage circuit”). In addition, Patent Owner’s proposed definition is imprecise because it does not quantify the amount of experience possessed by an ordinarily skilled artisan. Therefore, at this stage, we adopt Petitioner’s definition because we find it to be more consistent with the teachings of the ’593 patent and the asserted prior art.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownNo construction neededOther
“For purposes of this Decision, we apply the same construction as the ITC ALJ, i.e., that controlling the voltage of the second node does not require the voltage of the second node to be determined by the first driver alone. This is supported by contrast with another limitation in claim 1, which expressly recites direct control: “the signal of the third input terminal directly controls.” Ex. 1001, 9:58 (emphasis added). This is also supported by a paragraph in the Specification of the ’593 patent explaining that the Specification uses the word “directly” in contexts where the same is intended. Id. at 4:19–26. Further, as noted by the ITC ALJ, the Specification of the ’593 patent states that the second driver “controls the voltage on the first node” where such control is accomplished in conjunction with the outputting unit. Ex. 2018, 31–32 (citing Ex. 1001, 5:60–62, claims 1, 15). This supports the ITC ALJ’s understanding with respect to the first driver, i.e., that control can occur in conjunction with other elements.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Specifically, Petitioner relies on the timing diagram in Figure 21B of Kimura to illustrate the operation of the circuit in Figure 27C. Pet. 19 (reproducing Ex. 1004, Fig. 21B). Petitioner acknowledges that the timing diagram “is not specific to the device of Figure 27C.” Id. Still, Petitioner contends the Figure 27C circuit “would (or at least obviously could) be supplied with input signals in the same manner and with the same timing” because it includes “the same input and output lines and many of the same transistors as Kimura’s other circuits.” Id. (citing Ex. 1003 ¶¶ 160–165). According to the timing diagram, the potential of node 13 (V13) is shown at its highest level during period D. See Ex. 1004, Fig. 21B. Petitioner also cites Kimura for teaching that “the potential of the node 13 becomes an H level.” Pet. 18 (quoting Ex. 1004 ¶ 256). Yet Kimura describes the Figure 27C circuit’s operation at period D differently: “[I]n a period D, the potential of the node 13 can be lowered. Therefore, dielectric breakdown or deterioration of the transistor connected to the node 13 (e.g., the transistor 102, the transistor 203, the transistor 205, or the transistor 206) can be prevented.” Ex. 1004 ¶ 286 (emphasis added). And Petitioner cites this very teaching in its analysis of limitation [1-B]. See Pet. 20–21. This inconsistency undermines Petitioner’s argument that “the device of Figure 27C . . . would (or at least obviously could) be supplied with input signals in the same manner and with the same timing.” Id. at 19. In light of this inconsistency, and in the absence of a sufficient explanation as to why Kimura’s teachings about different circuits apply to the Figure 27C circuit on which Petitioner relies, we find Petitioner’s analysis of claim 1 to be deficient. Thus, we determine that Petitioner has not established a reasonable likelihood that it would prevail in showing that the subject matter of claim 1 would have been obvious over Kimura.” slip op. at 26
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDecided for petitioner
“presents facts that are different from those in General Plastic because Petitioner here did not use a prior Board decision or a prior preliminary response as a roadmap. Given the lack of road-mapping specific to our proceedings, we find that Factor 3 weighs strongly against exercising discretion to deny institution. Further, we note that “factors 1–3 only weigh in favor of discretionary denial when there are ‘road-mapping’ concerns under factor 3 or other concerns under factor 2.” Code200, UAB v. Bright Data Ltd., IPR2022-00861, Paper 19 at 5 (PTAB Aug. 23, 2022) (precedential) (“Code200”). Although Patent Owner alleges concerns under Factor 2 insofar as Petitioner knew or should have known of the asserted references at the time of the petition in IPR2023-01221 (Prelim. Resp. 9–12; PO Prelim. Sur-reply 2), we find such concerns to be of minimal significance where there is no road-mapping. Thus, we consider Factor 1 in conjunction with Factors 2 and 3 (see Code200 at 5) and find that Factors 1– 3 weigh against exercising discretion to deny institution. Similarly, the timing of the second petition in relation to the filing of the first petition (Factor 4), and when petitioner learned of the prior art (Factor 5), are more pertinent to the situation where the second petition is filed by a party using prior art allegedly newly discovered after receiving the Board’s unfavorable decision, as was the case in General Plastic, or after a preliminary response was filed in the first case. General Plastic at 10. That is not the situation before us here. We also do not agree with Patent Owner (see Prelim. Resp. 4–9) that the interplay between the instant case and the ITC Investigation implicates the same concerns from General Plastic about abuse or gamesmanship from multiple, staggered petitions. See General Plastic at 16–17. As in Code200, we find that “Patent Owner’s concerns of fairness are outweighed by the benefits to the patent system of improving patent quality by reviewing the merits of the challenges raised in the petitions, which have not been addressed to date.” Code200 at 6. Thus, we determine that Factors 4 and 5 do not weigh in favor of exercising our discretion to deny institution. Regarding Factor 6, Patent Owner argues that “[t]he Board should not expend its finite resources to endorse Petitioner’s second bite at the apple.” Prelim. Resp. 14. Nevertheless, because the earlier proceeding was terminated at Petitioner’s request, the Board has not previously considered the merits of Petitioner’s unpatentability contentions, and the Board’s involvement in the parties’ disputes related to the ’593 patent has been minimal up to this juncture. In the absence of meaningful efficiency concerns, we find that Factor 6 does not weigh in favor of exercising our discretion to deny institution. For Factor 7, we know of no reason why we could not meet the requirement under 35 U.S.C. § 316(a)(11) to issue a final determination within one year of institution, so we also find that this factor does not weigh in favor of exercising discretion to deny institution. After considering Petitioner’s and Patent Owner’s arguments, we conclude that the General Plastic factors weigh against exercising our discretion to deny review.” slip op. at 61
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,330,593 - Microchip Technology Inc. v. Aptiv Technologies AGInstitution deniedPTAB · Aug 29, 2024 · IPR2024-00496 · APJ Terrence W Mcmillin · IPR · Institution
The Board denied institution because the Petition relied on an unmet and inadequately supported claim construction and did not show that Chang and Chang II teach or suggest all limitations of claims 1–6.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“C. Summary We decline to institute trial because: (1) the claim construction contingency in the Petition has not been met; (2) the claim construction proposed in the Petition is not adequately supported; and (3) the Petition fails to show that all the limitations of any challenged claim are taught or suggested by the cited art. Petitioner has failed to show a reasonable 4 The Petition states that, “[f]or ease of analysis, Petitioner uses [Patent Owner]’s ‘interconnected to’ language since that phrase is used elsewhere in the claims, but the results are the same if ‘possessing’ was used instead.” Pet. 27 n.7. likelihood that it will prevail in establishing the unpatentability of challenged independent claim 1 or any of the challenged dependent claims. III. CONCLUSION For the foregoing reasons, we have determined that Petitioner has not established a reasonable likelihood of prevailing with respect to any claim. Therefore, we do not institute an inter partes review. IV. ORDER Accordingly, it is ORDERED that the Petition is denied, and no trial is instituted.” slip op. at 12
- BurdenNot shown unpatentable
“Petitioner does not contend that the plain and ordinary meaning of “having” as recited in claim 1 is either “interconnected to” or “possessing.” See generally Pet. As discussed above, Petitioner contended, in the district court litigation, that “having” as recited in claim 1 rendered the claim “nonsensical” and, thus, indefinite. Ex. 1080, 13–14. And, the District Court considered whether “having” had the same meaning in the context of claim 1 of the ’899 patent as “interconnected to” or “possessing” and determined that these terms were not equivalent. Id. at 14. We agree with the District Court. Thus, the Petition fails to provide a showing that the cited art teaches or suggests “a USB port having a plurality of USB ports” as recited in sole independent claim 1 of the ’899 patent. C. Summary We decline to institute trial because: (1) the claim construction contingency in the Petition has not been met; (2) the claim construction proposed in the Petition is not adequately supported; and (3) the Petition fails to show that all the limitations of any challenged claim are taught or suggested by the cited art. Petitioner has failed to show a reasonable 4 The Petition states that, “[f]or ease of analysis, Petitioner uses [Patent Owner]’s ‘interconnected to’ language since that phrase is used elsewhere in the claims, but the results are the same if ‘possessing’ was used instead.” Pet. 27 n.7. likelihood that it will prevail in establishing the unpatentability of challenged independent claim 1 or any of the challenged dependent claims.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningDecided for patent owner
“3 Moreover, our review of the docket from the district court litigation indicates that there has been considerable additional briefing and oral argument in the district court litigation on the claim construction issues. We have not had the benefit in this proceeding of adequate briefing and argument on claim construction. We decline to analyze and adopt a claim construction on the inadequate record here. “the claim is definite and, despite Petitioner’s assertion, Patent Owner has never sought to revise the claim. (Pet., 25.) Rather, Patent Owner has always maintained that a POSITA [(person of ordinary skill in the art)] would understand the term with reasonable certainty in view of the claims, specification, and prosecution history.” Prelim. Resp. 21 (footnote omitted); see also id. at 19 (“Specifically, a POSITA would understand that the plurality of USB ports the hub ‘has’ must include downstream ports.”). We do not adopt the claim construction upon which the Petition relies because it is not adequately supported. We apply the plain and ordinary meaning to the phrase “a USB port having a plurality of USB ports” as recited in claim 1.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Thus, the Petition fails to provide a showing that the cited art teaches or suggests “a USB port having a plurality of USB ports” as recited in sole independent claim 1 of the ’899 patent. C. Summary We decline to institute trial because: (1) the claim construction contingency in the Petition has not been met; (2) the claim construction proposed in the Petition is not adequately supported; and (3) the Petition fails to show that all the limitations of any challenged claim are taught or suggested by the cited art. Petitioner has failed to show a reasonable 4 The Petition states that, “[f]or ease of analysis, Petitioner uses [Patent Owner]’s ‘interconnected to’ language since that phrase is used elsewhere in the claims, but the results are the same if ‘possessing’ was used instead.” Pet. 27 n.7. likelihood that it will prevail in establishing the unpatentability of challenged independent claim 1 or any of the challenged dependent claims.” slip op. at 12
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,545,899 - PTAB · Aug 27, 2024 · IPR2024-00495 · APJ Terrence W Mcmillin · IPR · Institution
Instituted IPR on claims 13, 14, and 18–20 for the asserted §103 ground based on Chang and Chang II; the Board found a reasonable likelihood of success on at least one challenged claim.
RulingsInstitution decision- Parallel petitionsDecided for petitioner
“the need for this second . . . Petition, the Board should decline to expend its finite resources considering it.” Prelim. Resp. 1. Patent Owner argues that “[n]either the substance nor the timing of [Patent Owner]’s claim interpretations justifies this second Petition.” Id. at 6. We disagree and determine that two petitions challenging claims of the ’420 patent are justified under the circumstances presented here. With regard to substance of the claim interpretations and merits of the challenge, the claim interpretations offered in the instant proceeding have no relation to the claims or the merits of the challenges that are the subject of the first Petition. As stated by Petitioner, “[t]he petition in IPR2024-00228 challenges claims 1-12 and 15-17” and “[t]here are no overlapping claims in these petitions.” PET’s Expl. 1. Petitioner argues, “[t]herefore, the petitions present materially different challenges, each to a unique subset of ’420 patent claims.” Id. We agree that, because of the uniqueness of the claim interpretations asserted in this proceeding that are not at all related to any of the claims challenged in the prior Petition or to any of the challenges asserted in the prior Petition, the instant, second Petition is justified.” slip op. at 9
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“89–92. With regard to discretionary denial pursuant to Section 314(a), Petitioner states that it “hereby stipulates that, if the PTAB institutes this inter partes review, Petitioner will not pursue invalidity of the Challenged Claims in a parallel district court proceeding on the same grounds or any grounds that could have reasonably been raised before the PTAB in this Petition.” Id. at 90. Our analysis under Section 314(a) is guided by the USPTO Director’s Memorandum issued on June 21, 2022, titled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation” (“Director’s Memo”).5 Pursuant to the Director’s Memo, we “will not discretionarily deny institution . . . where a petitioner presents a [Sotera] stipulation.” Director’s Memo 3 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). Although Patent Owner cites the Director’s Memo and argues for discretionary denial under Section 314(a), Patent Owner fails to provide any reasoning or explanation as to why we should not follow the guidance of the Director. See Prelim. Resp. 4. Because Petitioner has offered a stipulation like that in Sotera, we do not discretionarily deny institution under Section 314(a).” slip op. at 11
- Prior constructionPrior construction adoptedDecided for petitioner
“Our rule relating to claim construction provides that “[a]ny prior claim construction determination concerning a term of the claim in a civil action . . . that is timely made of record in the inter partes review proceeding will be considered.” 37 C.F.R. 42.100(b). We have considered the District Court’s claim construction Order and Memorandum (Ex. 1080) that was 6 These alterations in original. timely made of record by Petitioner in this proceeding (Paper 11). Based on our independent review of the ’420 claims and specification, we agree with and adopt the reasoning and conclusion of the District Court that claim 13 should be corrected and rewritten as proposed by the Patent Owner and ordered by the District Court. Therefore, we construe claim 13 by twice replacing “hub” with –host— as shown in claim 13 as reproduced above. See Section I.D. (Challenged Claims) supra.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We determine that no additional claim terms require express construction. See, e.g., Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the 7 Claim 20 depends indirectly from claim 18 and directly from claim 19. Ex. 1003, 12:42. controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 15
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,619,420 - PTAB · Jul 15, 2024 · IPR2024-00229 · APJ Terrence W Mcmillin · IPR · Institution
The Board instituted review of claims 1–19 on all asserted grounds, finding a reasonable likelihood that Microchip would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“II. ANALYSIS We consider the arguments and evidence of the parties to determine whether Petitioner has met the reasonable likelihood standard for institution under 35 U.S.C. § 314(a).” slip op. at 9
- Skill levelSkill level patent owner adoptedDecided for patent owner
“The parties agree that a POSITA would have a four year or bachelor’s degree in electrical engineering or computer science and professional experience related to USB. Compare Pet. 23–24 with Prelim. Resp. 14. And, the parties also agree that a relevant advanced degree or additional education may take the place of at least some work experience and that work experience may take the place of some formal education. Id. Petitioner contends that a POSITA would have more familiarity with USB related documents and systems than contended by Patent Owner. We need not, and do not, resolve this dispute between the parties at this preliminary stage in this proceeding. We invite the parties to further address this issue, if they deem it necessary and appropriate. For purposes of this Decision, we adopt Patent Owner’s definition of the level of ordinary skill in the art. It appears consistent with what is reflected by the content of the applied prior art references. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). Accordingly, at this point, we consider the arguments and evidence from the standpoint of such a skilled artisan. If a POSITA was considered to have the additional work experience with USB systems and familiarity with USB standards as proposed by” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner states in the Petition that no terms need construction for this proceeding. Pet. 24–25. Patent Owner states that, at this time, Patent Owner sees no need to construe any claim language. Prelim. Resp. 20. For purposes of this Decision, we determine that no claim terms require express construction. See, e.g., Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Ex. 1005, 2:60–66. We determine that this contention seems reasonable in view of the market demands acknowledged in the Specification. KSR, 550 U.S. at 418 (“Often it will be necessary for a court to look to . . . the effects of demands known to the design community or present in the marketplace . . . to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.”). Petitioner also contends that “modifying Chang to include dual-role ports would further its express goal of ‘easily establishing a connection between a computer and another computer.’” Pet. 35 (citing Ex. 1014 ¶ 3). And, Petitioner relies on the acknowledgement in the ’962 patent that smartphones have become “standalone computing devices.” Id. (citing Ex. 1005, 2:44–50). The Petition states: [A] POSITA would have been motivated to include dual-role port(s) to further Chang’s goal of connecting the upstream computer to the downstream phone acting as a computer. Welch, ¶178. Specifically, dual-role ports would allow consumer products, such as smartphones, that operate as computers (in host mode) to “easily establish[] a connection” (EX1014, [0005]) to the upstream host; the smartphone would plug into the dual-role port and automatically connect to the upstream host (through the bridge) when the smart phone switches to host mode . . . without requiring the user to switch between dedicated host- and device-ports. Welch, ¶¶178-179. Pet. 35–36. According to Petitioner with supporting testimony of its declarant, “[t]his avoids the inconvenience, hassle, and confusion of consumers having to keep track of (1) what mode their phone is operating in and (2) what mode(s) are supported by individual hub ports.” Id. at 36 (citing Ex. 1013 (Welch Decl.) ¶ 179). Here again, we determine that this reasoning provides rational underpinning, supported by evidence, that a skilled artisan would have been motivated to modify the USB hub module of Chang to include dual-role ports as described in Chang II.” slip op. at 32
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,645,962 - PTAB · Jul 15, 2024 · IPR2024-00230 · APJ John D Hamann · IPR · Institution
The Board instituted IPR on claim 1 under both asserted § 103 grounds, finding a reasonable likelihood that Chang and Chang II, alone or with Chutorash, render the claim obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018); see 37 C.F.R. § 42.108 (2023). Upon consideration of the papers, we conclude that the information presented shows that there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of the challenged claim of the ’072 patent.” slip op. at 2
- Skill levelSkill level patent owner adoptedDecided for patent owner
“The parties’ dispute regarding the level of ordinary skill in the art does not substantively impact our analysis for purposes of institution. Rather, we ordinary skill in the art that Petitioner shows that there is a reasonable likelihood that it would prevail in proving the unpatentability of the challenged claim. At this stage of the proceeding, however, we adopt Patent Owner’s proposed definition for one of ordinary skill in the art. Prelim. Resp. 13. This proposed definition is consistent with the ’072 patent and the asserted prior art, and we apply it in our analysis below. During trial, and in accordance with our Rules, the parties should address what substantive effect, if any, different proposed definitions for the level of ordinary skill in the art have on analyzing what the prior art teaches or in otherwise evaluating unpatentability of the challenged claim.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededPlain and ordinary meaningDecided for patent owner
“III. CLAIM CONSTRUCTION Because the Petition was filed after November 13, 2018, we apply the same claim construction standard that would be used in a civil action under 35 U.S.C. § 282(b), following the standard articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). 37 C.F.R. § 42.100(b); 83 Fed. Reg. 51,340, 51,340–41, 51,343 (Oct. 11, 2018). In applying such standard, claim terms generally are given their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art, at the time of the invention and in the context of the entire patent disclosure. Phillips, 415 F.3d at 1312–13. “In determining the meaning of the disputed claim limitation, we look principally to the intrinsic evidence of record, examining the claim language itself, the written description, and the prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17). physically embedded in a vehicle.” See Pet. 27–28. Patent Owner does not disagree with this proposed construction, but argues that we do not need to construe this term, or any other, for purposes of institution. Prelim. Resp. 19. We agree with Patent Owner. Thus, for purposes of our Decision on Institution, we do provide an express construction of any term. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”). And we afford the claim terms their plain and ordinary meaning. A final determination as to claim construction will be made at the close of the proceeding, based on all the arguments and evidence of record.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“dual-role port and a Mux to route the port to the appropriate transmission path. At this stage, we agree with Petitioner and find that it would have been obvious to substitute Chang II’s dual-role port for Chang’s port 50, as well as to include Chang II’s switching. Pet. 42–44, 64–65; Ex. 1013 ¶¶ 184– 185. In particular, we find persuasive Mr. Welch’s testimony that one of ordinary skill in the art would have been motivated to employ dual-role mode ports instead because employing dedicated ports requires having “‘multiple connectors, multiple [application-specific integrated circuit (ASIC)] pins and the like,’ which adds ‘overhead’ and ‘increase[s] the cost[s].’” Ex. 1013 ¶ 177 (quoting Ex. 1025,19 1:36–43) (second and third alterations in original). 19 US 8,683,085 B1, issued Mar. 25, 2014 (Ex. 1025, “Castleberry”). Chang II’s dual-role port for Chang’s port 50 “avoids the inconvenience, hassle, and confusion of consumers having to keep track of (1) what mode their phone is operating in and (2) what mode(s) are supported by individual hub ports.” Id. ¶ 179; Pet. 44. As Mr. Welch testifies, “[w]ith a dual-role port, the user would not have to know what mode the smartphone was operating in, and then switch the smartphone between the appropriate dedicated host or device port.” Ex. 1013 ¶ 179. At this stage, we find that this rationale also provides sufficient motivation for one of ordinary skill in the art to employ a dual-role port in lieu of host port 50. In addition, at this stage, we agree with Petitioner that “in view of a dual-role mode USB port, it would have been obvious to include ‘USB multiplexing switches connected to the USB port, the USB hub, and the USB bridge’ to route the downstream USB product to the appropriate path.” Pet. 62 (emphases omitted). This is consistent with Chang II’s teachings, which require such switching. E.g., 1015 ¶¶ 11, 21. In other words, to realize the benefits of the rationales for using dual-role ports in Chang, one of ordinary skill in the art would have included a switch to route the downstream port to the appropriate path. See Ex. 1013 ¶¶ 184–185. In addition, we agree with Petitioner and find that one of ordinary skill in the art would have had an expectation of success in modifying Chang to include dual-role ports and switching. Pet. 44. As we discuss above, dual-role ports, host/device detection, and multiplexing switches were already well-known.” slip op. at 29
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 11,176,072 - PTAB · Jul 15, 2024 · IPR2024-00228 · APJ Terrence W Mcmillin · IPR · Institution
Instituted IPR of claims 1–12 and 15–17 because Petitioner showed a reasonable likelihood of prevailing on obviousness over Chang and Chang II.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the Petition, the Preliminary Response, the Reply, and the Sur-reply “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we institute an inter partes review as to claims 1–12 and 15–17 of the ’420 patent on all grounds of unpatentability presented.” slip op. at 2
- Skill levelSkill level patent owner adoptedDecided for patent owner
“degree in electrical engineering or computer science and professional experience related to USB. Compare Pet. 22–23 with Prelim. Resp. 13. And, the parties also agree that a relevant advanced degree or additional education may take the place of at least some work experience may take the place of some formal education. Id. Petitioner contends that a POSITA would have more familiarity with USB related documents and system than contended by Patent Owner. We need not, and do not, resolve this dispute between the parties at this preliminary stage in this proceeding. We invite the parties to further address this issue, if they deem it necessary and appropriate. For purposes of this Decision, we adopt Patent Owner’s definition of the level of ordinary skill in the art. It appears consistent with what is reflected by the content of the applied prior art references. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). Accordingly, at this point, we consider the arguments and the evidence from the standpoint of such a skilled artisan. If a POSITA was considered to have the additional work experience with USB systems and familiarity with USB standards as proposed by Petitioner and the level of skill was enhanced, our Decision to institute trial would be further supported. However, our Decision to go forward with trial is supported by either of the definitions offered by the parties.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Petitioner states in the Petition that no terms need construction for this proceeding. Pet. 23–24. Patent Owner states that, at this time, Patent Owner sees no need to construe any claim language. Prelim. Resp. 18. For purposes of this Decision, we determine that no claim terms require express construction. See, e.g., Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Ex. 1003, 2:56–62. We determine that this contention seems reasonable in view of the market demands acknowledged in the Specification. KSR, 550 U.S. at 418 (“Often it will be necessary for a court to look to . . . the effects of demands known to the design community or present in the marketplace . . . to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.”).” slip op. at 29
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,619,420 - PTAB · Jul 15, 2024 · PGR2024-00011 · APJ Jean R Homere · PGR · Institution
The Board instituted PGR on claims 1–15 and all asserted grounds, finding a reasonable likelihood that at least claim 1 is obvious over Chang, Chang II, and POSITA knowledge.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 324(a) (2018); 37 C.F.R. § 42.4(a) (2023) (“The Board institutes the trial on behalf of the Director.”). Section 324(a) provides that a post-grant review may not be instituted “unless . . . the information presented in the petition . . . , if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” Upon considering the evidence and arguments in the Petition (including its supporting testimonial evidence) and the evidence and arguments in the Preliminary Response (including its supporting testimonial evidence), we determine that the information presented shows that it is more likely than not that Petitioner would prevail with respect to at least one of the challenged claims. Accordingly, we institute post-grant review on all” slip op. at 2
- Other 314aDenied
“Petitioner hereby stipulates that, if the PTAB institutes this post-grant review, Petitioner will not pursue invalidity of the Challenged Claims in a parallel district court proceeding on the same grounds or any grounds that could have reasonably been raised before the PTAB in this Petition. Pet. 106. Petitioner cites the Director’s Memorandum, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation, issued June 21, 2022 (“Guidance Memo”)3 in support of its contentions. Pet. 106.” slip op. at 11
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“§ 325(d), the Board uses the following two-part framework: (1) determining whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of the first part of the framework is satisfied, determining whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). In applying the two-part framework, we consider several non-exclusive factors, including: (a) the similarities and material differences between the asserted art and the prior art involved during examination; (b) the cumulative nature of the asserted art and the prior art evaluated during examination; (c) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (d) the extent of the overlap between the arguments made during examination and the manner in which petitioner relies on the prior art or patent owner distinguishes the prior art; (e) whether petitioner has pointed out sufficiently how the examiner erred in its evaluation of the asserted prior art; and (f) the extent to which additional evidence and facts presented in the petition warrant reconsideration of the prior art or arguments. Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 at 17–18 (PTAB Dec. 15, 2017) (precedential as to Section III.C.5, first paragraph) (“Becton, Dickinson”). Becton, Dickinson factors (a), (b), and (d) relate to whether the art or arguments presented in the Petition are the same or substantially the same as those previously presented to the Office. Advanced Bionics, Paper 6 at 10. Factors (c), (e), and (f) “relate to whether the petitioner has demonstrated a material error by the Office” in its prior consideration of that art or arguments. Id. Only if the same or substantially the same art or arguments were previously presented to the Office do we consider whether the petitioner has demonstrated a material error by the Office. Id. “At bottom, this framework reflects a commitment to defer to previous Office evaluations of the evidence of record unless material error is shown.” Id. at 9.” slip op. at 14
- Skill levelSkill level patent owner adoptedDecided for patent owner
“At the time of the invention, a POSITA would have had a bachelor’s degree in computer science, electrical engineering, or an equivalent, and two years of professional experience working with computer network protocols such as USB. Lack of work experience can be remedied by additional education, and vice versa. Id. (citations omitted). At this stage, we find Patent Owner’s proposed level of a POSITA to be consistent with the problems and solutions disclosed in the ’643 patent and prior art of record, and adopt it as our own for purposes of this Decision. See, e.g., In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (approving the determination of the level of ordinary skill in the art by appeal to the references of record). We nonetheless invite the parties to further address this issue, if they deem it necessary and appropriate. The parties should also specifically explain how different definitions for one of ordinary skill in the art relate to specific arguments and issues of unpatentability or claim construction, to the extent that a dispute remains as to who constitutes a POSITA.” slip op. at 20
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites KSR · Graham · NautilusPatents in suitUS 11,681,643
Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.